Feature Articles

US Patent Office Eligibility Guidelines

The validity of thousands of software-related patents has been thrown into doubt by a string of court decisions. Let’s review the new USPTO guidelines.

Return on Investment Overview

Over 300,000 patents were issued by the USPTO in 2014 - about 1,200 patents each working day. How much will a business realize on its IP investment?

Patent Prosecution Overview

Is your company considering filing a US patent application? A general overview may help you decide your patent strategy. Take a moment to learn some facts about the patent process.

Patent Prosecution Overview

What You Need to Know Before Filing

FILING AN APPLICATION

Taking the first steps in filing a US patent application is, to most newcomers, an unfamiliar and confusing process. This article provides a general overview of the process of acquiring a domestic US utility patent. Before you file an application, work closely with a qualified patent attorney or make sure you thoroughly understand the examination process. You will find the rules that are applied by the patent examiner in the Manual of Patent Examining Procedure (MPEP).

US patent applications cover one of three types of subject matter: plant, design, and utility. Utility patent applications are the most frequently used. Although design patents are useful for protecting the appearance of a product and graphical user interfaces (GUI). In this article, we will focus on basic utility US patent applications and not discuss other types of US patent applications, such as the provisional, continuation, reissue, divisional, and continuation-in-part applications.

Since March 16, 2013, the US has enforced a "first to file" rule. That means inventors should not wait before submitting a patent application. Also, keep in mind that offers of sale, public disclosures, and public demonstrations of your invention can affect your ability to acquire patent protection. Additional information is available from the USPTO.

A nonprovisional utility patent application is a collection of documents and information that is reviewed by a US patent examiner who is knowledgeable in the relevant field. A typical utility patent application includes a description of the invention (part of the specification), one or more sentences describing the exact subject matter being patented (the claims), drawings, an inventor's oath or declaration, an application data sheet (ADS), and fees. Many of the required forms are available electronically.

Consider the option of non-publication but remember that your published application provides certain rights once the patent issues. Currently, these rights include the opportunity to obtain a reasonable royalty for pre-patent grant infringement, provided that actual notice is given to the infringer. An example of a published application can be found here.

RECIEVING AN OFFICE ACTION

Your application will be reviewed for completeness and you may be contacted if there are any technical errors. Once complete, your application will be sent to an examiner assigned to the appropriate art group. The examiner will determine if your application meets the legal requirements for patentability, including novelty and non-obviousness. The time it takes to get a response (office action) depends on the art group and can vary between approximately 3 to 60 months. In 2014, the average wait time before receiving the first office action was 18.4 months. A tool is available on the USPTO site that will help you estimate when you can expect your first office action. If time is of the essence, the USPTO offers prioritized examination for an additional fee.

The right to exclude others from making, using, selling, or offering to sell your invention without your permission will depend on how you describe your invention using "claims." Claims particularly point out the subject matter that the applicant regards as the invention. Much of the scrutiny during this phase of patent prosecution is centered on the wording of the claims. You can follow the prosecution of your application using private PAIR (Patent Application Information Retrieval).

Your examiner may reject your application because it claims an invention that already exists or is an obvious improvement or alteration of a previously known invention. You will have at least one opportunity to adjust your claims or rebut the examiner's argument.

Your patent attorney or agent will receive a certain amount of time to respond to the office action without the payment of a late fee. If after reviewing your response the examiner is still not satisfied that your application meets the requirements for patentability, you will receive a second office action, which may be a final rejection. When you receive a final rejection, you may appeal the decision, file a request for continued examination (RCE), or use the After Final Consideration Pilot 2.0 Extension (AFCP) program. The average time to receive a final decision (as reported for 2014) is about 27 months.

RECEIVING AN ALLOWANCE

Once the examiner decides your application meets the requirements for patentability, you will receive a notice of allowance. You are required to complete any tasks still remaining, such as filing inventor oaths or declarations, inventor assignments, and fees. Consider filing a continuing application before paying your issue fee. Continuing applications allow you to file a new application while keeping the benefit of the previous application filing date. If you run into any problems, consider contacting the Patents Ombudsman Program. And remember, you still have an obligation to disclose any information that might affect the examiner's decision on patentability. Disclosing new information (references) after allowance will require re-opening prosecution by filing an RCE or by using the Quick Path Information Disclosure Statement (QPIDS).

Once the patent has issued, you are free to assert your patent against infringers in the U.S. District Court system. Remember, your patent might still be challenged in the USPTO before the Patent Trial and Appeal Board (PTAB). Challenges can be made using an Inter Partes Review (IPR), Post-Grant Review (PGR), or Covered Business Method Patent Review (CBM).

This article describes only a basic review of a typical patent prosecution. Do not rely on this article as a comprehensive guide. If you want to learn more about protecting your company's inventions, contact a qualified patent attorney.